The Council of Ivy Group Presidents v Boydex International Pty Ltd

[2000] ATMO 72

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by The Council of Ivy Group Presidents to registration of trade mark application number 665874 in the name of Boydex International Pty Ltd for the word trade mark IVY LEAGUE in Class 25.

Background
Trade mark application number 665874 was filed on 6 July 1995 in the name of Boydex International Pty Ltd (the applicant).  The application was for the registration of the word trade mark IVY LEAGUE and covered the statement of goods, "clothing, footwear and headgear " in Class 25.  Subsequent to examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 18 July 1996.

Notice of opposition to the trade mark’s registration was filed by The Council of Ivy Group Presidents (the opponent) on 18 October 1996.  That notice listed a number of grounds.  However, at the hearing held to determine the matter, the opponent's legal representative only pursued the grounds based on ss.43, 58 and 60.  Accordingly, those grounds are the subject of this decision and the reasons given for it.

The applicant requested that the matter be decided by the Registrar and it came before me, as a delegate of the Registrar, for hearing in Melbourne.  Representing the opponent at the hearing was Mr Bruce Caine of Counsel, instructed by Ms Michelle Eadie of Minter Ellison.  Appearing on behalf of the applicant was Ms Elspeth Strong of Counsel, instructed by Freehills Patent Attorneys.

In these reasons for my decision, I will attempt to present a brief summary of the main points made by both sides in their submissions, and only in relation to the grounds relied upon.

The Evidence
The evidence in support includes a declaration by Elizabeth Avery, a solicitor of Minter Ellison - the opponent's legal representatives.  Ms Avery annexes to her declaration an advertisement, on behalf of the opponent's licensee, of clothing bearing an IVY LEAGUE trade mark; a copy of a United States of America (USA) trade mark registration certificate for the words THE IVY LEAGUE; and a copy of an email relating to use of the mark by the opponent.

Completing the evidence in support is a declaration by Jeffrey Orleans, Executive Director of the opponent, who declares as to the history and composition of the association which comprises the opponent.  He talks about the opponent's trade mark, THE IVY LEAGUE, which is registered in the USA and Japan, and he annexes evidence of these registrations.  He discusses the use of the mark on sporting uniforms, clothing and related items; the value of sales relating to this use; and the various magazines, other publications, and advertising relating to the mark.  He further annexes copies of material relating to these various uses and licensing arrangements. Mr Orleans discusses an Internet website relating to the opponent, annexes material related to this outlet, and also outlines exposure of the opponent's mark in newspapers and other media, including films and television.  He gives details about sporting teams related to American universities, which are members of the opponent, and which have visited Australia, and also provides information on Australians who were and are currently enrolled at what he describes as "Ivy League" universities in the USA.

The evidence in answer includes a declaration by Shafkat Dewani, the Product Manager of the Jeanswear section of the applicant.  Mr Dewani annexes confidential documents listing the principal customers of the applicant, and also its sales volumes and promotional expenditure from 1996 to 1998.  He gives the history of the applicant's use of the present trade mark in respect of clothing, and the methods employed to present clothing bearing the mark to potential retailers, including twice yearly presentations and through telephone contacts.  He annexes samples of various embroidered tags, swing tickets and packaging materials all featuring the mark.  Completing the evidence in answer are declarations from Andrew Crockett, Michael Wrightson, Kalven Baker, Yuzo Saeki and Anthony Iudica, who are all persons occupying positions in various national clothing retail chains as buyers or managers and who claim considerable cumulative experience in the trade in Australia.  They all declare as to their familiarity with the present trade mark and their association of it with the applicant.

Submissions
In his submissions on behalf of the opponent, Mr Caine said that, in an opposition matter based on a s.43 ground, evidence to establish or refute the claim can be relied upon by both parties.  He said that the ground provided that the "inherent qualities" of a mark should be examined in relation to whether deception or confusion would be likely to occur if the mark was registered, and he referred for support here to the words of Branson J. in Registrar of Trade Marks v WoolworthsLtd (1999) 45 IPR 411 (the Woolworths Metro case).  Mr Caine said further that, in cases such as Mid Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 42 IPR 561, the Full Court has said that any inquiry under s.43 should be concerned with "internal representation", and also that the possibility of deception and confusion should be considered on the basis of what rights can be afforded to the applicant by registration - the "notional use" that a mark could be put to.

Mr Caine said that it was necessary to show that there would be a reasonable likelihood of deception and confusion, in relation to the opposition grounds under ss.43 and 60.  He discussed the issues of the deceptive similarity of trade marks and the ensuing deception and confusion which could ensue in the market place through their use, referring in his arguments to such cases as Woolworths Metro, supra, Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd. (1979) RPC 409, Shell Co of Australia v Esso Standard Oil (Australia) Ltd, (1961) 109 CLR 407 and Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

He said that the Woolworths Metro case and also some recent Office decisions had indicated that, in the context of deciding an opposition, it was allowable for the Registrar's delegate to take notice of his or her own knowledge of the notoriety of certain indicia included in marks.  He said that, in the present instance, the words IVY LEAGUE were so well known that they had been absorbed into the common stock of the English language as indicating a connection with the universities comprising the opponent.  He said that the mark presently applied for was plainly identical to that phrase and its use connoted falsely that there was a connection in the course of trade between the applicant and the opponent.  He said that the inherent qualities of the mark compelled a conclusion that a not insignificant number of consumers would be deceived, caused to wonder, or be left in doubt about whether the applicant's clothing was somehow connected to the opponent's member universities.

With respect to the s.60 ground, Mr Caine said that the evidence clearly showed that the opponent had a significant reputation in the words IVY LEAGUE.  This would, he said, be likely to lead to relevant customers falsely concluding that the opponent had endorsed or licensed the applicant's use of that trade mark on clothing.  He criticised, at length, the applicant's evidence of use, saying that it was not sufficient nor credible enough for the Registrar to form a proper view as to the strength of any reputation which the applicant might have for its mark with the appropriate purchasing public, which it might have accrued as at the date of filing.  He said that it was this market which should be considered in determining the matter, rather than the traders whose declarations were included in the applicant's evidence.  He said that, in contrast, the opponent's evidence was comprehensive and credible, and indicated use of the words THE IVY LEAGUE by the opponent for over 50 years.  He said that that mark had been featured in all elements of the Australian media, had been exposed to the Australian public through visits by Ivy League sporting teams to this country and also through Australian students enrolled at the opponent's member universities.  He said further that, notwithstanding that the opponent could point to little use on the relevant goods in Australia, the words in question had a wide reputation here in relation to the appropriate universities.  He said that the opponent had, in fact, licensed the mark to be used by clothing manufacturers in the USA.  Thus, he said, the opponent had been seen to be using the mark on the appropriate goods in the course of trade.

On the ground that the applicant was not the owner of the mark, Mr Caine referred to several of the leading cases on this subject, including Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402, Shell Company (Australia) Limited v Rohm and Haas Co (1949) 78 CLR 601, Amalgamated Tobacco Corporation Limited (1951) 82 CLR 199, Thunderbird Products Corp v Thunderbird Marine Products Pty Limited 131 CLR 592, and Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414. He said that, to decide who was the true owner of a trade mark in Australia, the Registrar should consider who was the common law owner. There, the test included deciding who was the first user of the mark in this country. He maintained that that entity here was the opponent, which he said had been shown in the evidence to have used the mark in Australia through its licensee. He said that it did not matter that the use relied on was isolated or modest but that it was enough that there was an existing intention to offer or supply, in Australia, goods bearing the mark in the course of trade.

In making her submissions on behalf of the applicant, Ms Strong, said that there was an onus on the opponent to establish the validity of its grounds of opposition.  She said that, in relation to an opposition ground under s.43, any alleged connotation in a mark must be present in the mark itself.  She said that, here, the words IVY LEAGUE had no connotation in relation to the clothing goods covered by the present specification.  She continued that, even if the ground could include a connotation arising from the reputation of another trade mark, then it was unlikely that there was any tangible danger of deception or confusion occurring in the present instance because any reputation which the opponent might have had in the subject phrase was limited to the universities involved.

In relation to the s.58 ground, that the applicant was not the true owner of the mark and therefore not eligible to apply for its registration, Ms Strong agreed with Mr Caine that it was accepted law that the first user of a mark in Australia becomes the owner at common law - Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd, supra.  She said that the evidence here showed that the applicant first used the words IVY LEAGUE as a trade mark in Australia in respect of clothing from about March 1995.  She referred to statements made in several of the declarations included in the applicant's evidence in answer to illustrate her claims here.  She submitted that, in contrast, there was no evidence before me of any use by the opponent of those words in relation to sales of clothing in Australia.  She said that there was also no evidence to support the opponent's claims that it had licensed the mark to clothing manufacturers in this country.  She said that any instances shown of use in relation to the goods in question was in the USA, from dates which were arguably after the filing of the present mark and in media which was not shown to have been circulated in Australia.

On the s60 ground of opposition, Ms Strong said that the opponent's claims about having a reputation for the words IVY LEAGUE in Australia were not properly supported by its evidence.  She said that this material showed, at best, that the opponent could only claim that those words were known to a limited number of students as applying to a group of American universities - but not in relation to clothing.  She said that all of the trade mark registrations, referred to as belonging to the opponent for clothing and which included the phrase in question, were of American origin and almost all had a priority date after the critical date here.  She submitted that, similarly, the opponent's evidence including examples of the use of those words were almost all American, were of a limited nature and were not convincing in relation to claims that very many Australians had been exposed to them.  She said that the opponent's claims of use of the phrase in the printed media, in films, on television programmes and in relation to visiting sporting teams were only shown to refer to the universities comprising the opponent, and were not relevant to a claim of a reputation for clothing in Australia.  She said that very few of the dictionary references, relied upon by the opponent in its claims relating to the use of the words IVY LEAGUE, referred to clothing.  However, if they did, they made generic reference only.  These definitions, she said, did not reflect a market perception in Australia of those words being a strong and well recognised brand for any particular goods.  She said that the informal email survey conducted by the opponent, the results of which were included in its evidence, was held in January 1999 - well after the relevant date - was not a properly conducted survey and was imprecise in its claimed conclusions.

Ms Strong said that, even if the opponent had established the necessary reputation in the words IVY LEAGUE, it still needed to show that deception or confusion would be caused as a result of the use of the present trade mark on the goods in the specification.  This, she said, had not been done.  The opponent had not shown any reputation in the relevant goods, there had been no evidence of any deception or confusion occurring and nothing had been shown to indicate that there was a connection in trade between the applicant's goods and the opponent.

She closed her submissions by asking that I award costs in the matter in favour of the applicant.

Analysis
If the opponent intended to rely upon grounds raised in the notice of opposition, other than ss.43, 58 and 60, it did not support them in the evidence or in its submissions.  Accordingly find that it is not successful in relation to them.  As I have previously indicated, I will limit my deliberations to those three grounds referred to by the opponent’s legal representative at the hearing.

Section 43
This section reads:

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

The word "connotation", in this context, refers to that which is implied within a trade mark itself - in addition to its essential or primary meaning.  The ordinary meaning of that word is given in the Macquarie Dictionary as:

1. the act or fact of connoting.  2. that which is connoted; secondary implied or associated meanings (as distinguished from denotation): for example, the word "bum" has connotations of vulgarity.

In the Oxford English Dictionary the definition is given as:

1. The signifying in addition; inclusion of something in the meaning of a word besides what it primarily denotes; implication.

Therefore it can be said that the word refers to that which is implied in a trade mark - in addition to its essential or primary meaning.  A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark.  The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion.  Considerations under s.43 must therefore concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public. The operation of the section does not depend upon the existence of a conflicting trade mark.

It is possible, as is shown in recent Office decisions regarding such words as CONFEST, SUMMER BAY, and BRAVEHEART, that evidence can reveal a relevant connotation.  As I said, as the Registrar's delegate, in the CONFEST decision in Down To Earth (Victoria) Co-Operative Society Ltd v Schmidt (1998) 41 IPR 632:

Considerations under s.43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public.  For example, deception or confusion could arise in regard to the character of the services, or the implied endorsement or licence of services by a person or organisation.

This might occur when evidence convincingly shows that there is a perception, among people in an intended market, that a term is so related to one party that use of the same mark by another trader on particular goods or services will be deceptive and confusing because purchasers might incorrectly infer some sort of endorsement by, or relationship with, the former entity.

The trade mark in question here is IVY LEAGUE and it is necessary, for the purposes of s. 43, to look at that mark in the context of the goods, which comprise clothing, footwear and headgear.  There is nothing, so far as I can see, in the prima facie meaning of these words which has any direct reference to these goods.

However, Mr Caine has said that, because the evidence allegedly shows that the words IVY LEAGUE are so widely known in Australia as being connected with certain universities in the United States, then there is a connotation in the mark that the opponent has, in some way, given approval for, or has a connection with its use on goods specified in the present application.  I have reviewed the opponent's evidence to ascertain whether this claim is reasonable.

My first observation of that evidence is that it is, to a great extent, related to the North American use of the words IVY LEAGUE.  Any references to the opponent are, from the evidence, usually in terms of the relationship of that phrase with the constituent universities themselves and the exclusive "club" type association enjoyed by present and past members of those institutions.  When the words in question are considered in terms of the universities and the goods here, that association becomes, in my opinion, somewhat tenuous.  Some of the American-based evidence refers to trade marks registered in the USA, which include the words THE IVY LEAGUE, and also there is mention of a Japanese registration.  As I have previously said, these are factors which I cannot take into account in determining the s.43 ground of opposition.  They are more correctly considered in terms of s.60.  However, as the evidence relates to an association of the phrase with the opponent and clothing sold by it, the evidence is far from convincing.  The only evidence relied upon by the opponent comprises the declarations by Ms Avery and Mr Orleans.  These reveal some comparatively limited sales, and similarly restricted advertising of clothing and sporting goods bearing those marks.  There are, I concede, many references in the declarations and attachments to “Ivy League” universities, but these mentions are, in my estimation, in the context of the academic excellence and sporting achievements of the member institutions - not in relation to clothing sold by them.  Accordingly, these documents do not, in my estimation, support the opponent's claim that deception and confusion would be caused by a connotation contained within the mark itself.

The Australian references in the evidence reveal even more slender links.  In the excerpts from the Australian media showing use of the words IVY LEAGUE, the overwhelming number concern the member universities themselves.  If they are used in respect of clothing, they appear to indicate a vague "style" of dress, which is open to many inferences, rather than referring to goods having the imprimatur of the opponent.  Additionally, nothing has been put to me that the film and television references of the words, relied upon by the opponent as indicating the requisite exposure of the words in Australia are, again, anything more than mentions of the universities themselves, rather than highlighting a link with the opponent's clothing.  The evidence of Internet access by Australian web users has revealed comparatively few hits from this country on the opponent's website.  The one documented access merely reveals an attempt by a Mr Fred Smagorinsky to correct an error in a "recent Field Hockey (Internet?) release".

Given the foregoing, I find that the opposition, so far as it relies upon s.43, is not made out.

Section 58
This section reads:

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

The term "owner" in the Trade Marks Act 1995 equates to that of "proprietor", as referred to in the Trade Marks Act 1955 - see p.2 of the Readers Guide to the 1995 Act.  The initial onus, with respect to ownership, is on the applicant for registration.  As is stated in s.27 of the Act:

27.(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:

(a)the person claims to be the owner of the trade mark; and

(b)one of the following applies:

(i)the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii)the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii)the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

The dispute of a claim to ownership of a mark can only proceed to be considered where the opponent can also show that the word or words it relies upon as being owned by itself or another person is substantially identical with the mark, the subject of the application for registration.  As Gummow J. said in Carnival Cruise Lines Inc v Sitmar Cruises Ltd. (1994) AIPC 91-049 at 38,114, when referring to the concept of proprietorship in the Trade Marks Act 1955, and to Shell Co. (Aust.) Ltd v Rohm and Haas, supra:

[Shell v Rohm and Haas] does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. The phrase "substantially identical"  was discussed by Windeyer J. in The Shell  Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961-1963) 109 CLR 407 at 414.

The applicant's mark is the words IVY LEAGUE, while the opponent's mark comprises those words preceded by the definite article.  Some of the American registrations include an ivy device but here is at least one registration for the words, THE IVY LEAGUE, in respect of clothing.  I do not think that anything turns on the inclusion of the word "THE" in the opponent's mark and I therefore find that the respective marks of the parties here are substantially identical.  Turning to the goods of interest to both parties, it is obvious that they are also the same.  The present application comprises the broad statement of goods, "clothing, footwear and headgear".  The opponent, from its evidence, sells sporting clothing, caps and shirts in America.  Therefore, both of the parties to this dispute are laying claim to be the owner of the same trade mark for the same goods.

However, as Mr Caine and Ms Strong both submitted, as per Settef v Riv-Oland Marble, and Shell v Rohm and Haas, both supra, a mark's ownership in Australia may be claimed either on being the first user of the trade mark in this country, in relation to the nominated goods or services, or on the basis of the making of an application for its registration.  In determining a claim of first use of a mark in Australia, any small amount of use will suffice, but the effect of the act relied on to constitute use must be the creation, in the minds of those concerned, of an impression that the goods of a particular trader are being offered for sale, in this country, under the trade mark.  As Mr Caine strongly proposed, there is authority that a court will regard slight use, in Australia, by an overseas owner as sufficient to give it ownership of the trade mark in Australia: The Seven Up Co v OT Ltd ( 1947) 75 CLR 203 at 211; Aston v Harlee Manufacturing Co ( 1960) 103 CLR 391 at 400; and Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2), supra.

The applicant here has submitted evidence of use of the subject mark, claiming that this clearly shows that it first used the mark in this country since March 1995.  This was said in the Dewani declaration to be at the first of twice yearly presentations in 1995 by the applicant to potential purchasers.  The claim of use of the mark since 1995 was supported by most of the applicant's declarants - although none specify the month.  The applicant applied for registration of the mark in July of that year.  Mr Caine has attacked this evidence as being vague and imprecise.  Notwithstanding this, I think that there is sufficient in all of the applicant's evidence to show that the applicant was active in promoting the trade mark in question sometime during 1995.  However, having considered all of that material, I cannot agree that it is certain that that party used the subject mark before the date of application.  I find then that the earliest that the applicant can be sure to have a claim to the mark is that of its filing date - 6 July 1995.

The opponent, on the other hand, is relying, in its claims of first use, upon Mr Orleans statements that, since 1992, advertisements bearing its mark appeared in various alumni magazines read by 25,000 "non-US readers" and which were "distributed in Australia".  However, there is nothing to support these claims - especially that the magazines in question which contained the advertisements appeared anywhere outside the USA, or were seen by anyone in this country.  In any case, the particular advertisement exhibited in the evidence was said to have been included in an annual publication entitled Ivy League Football Guide, which was issued on an unspecified date in 1995.  The subject advertisement includes a "1-800" telephone number for use by purchasers.  However, that number is not accessible from Australia.  Additionally, the shipping and handling information provided only quotes prices for "Standard Delivery Continental U.S." or "Two Day Air" or "Next Day Air" delivery.  Given all of these factors, I cannot agree that any of this material equates to an offer to sell clothing in Australia.

Accordingly, I find that the applicant was the first user in Australia of the trade mark IVY LEAGUE for the goods covered by the specification and is, as a result, the owner of the mark in this country.  I therefore dismiss this ground of opposition.

Section 60
This section reads:

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

The test for determining the likelihood of deception and confusion occurring, under the Trade Marks Act 1995, has been recently determined by French J. in the Woolworths Metro case, supra, (at paragraph 45), where his Honour says, with reference to the Smith Hayden case, supra,

The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

There is no change in the law from the Trade Marks Act 1955 that, in attempting to satisfy the Registrar of that likelihood, there is an evidentiary onus on the opponent, in the first instance, to establish the extent of its reputation in Australia - re Heerey J., when referring to s.28 of that Act, in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 at 501. I agree that the opponent, from the evidence, does have some claim to be associated with the trade mark THE IVY LEAGUE in relation to clothing in the USA. It sells some of these goods in America through its licensees, although advertisements for the opponent's goods only appear to have been placed in the various institutions' alumni magazines, or on its website. Accordingly, the American promotion of the brand appears to be chiefly directed at present and past attendees of the opponent's member universities who receive these publications. Additionally, the amount of THE IVY LEAGUE branded clothing sold in the USA is, from the Orleans declaration, very small - only $60,000 in the five years to 1997. This would seem to me to be a very tiny portion of the US clothing market and hardly enough to suggest a significant reputation for the opponent, in relation to clothing, amongst the wider clothes-buying public in America.

In Australia, the opponent has produced no actual evidence of any sales in relation to clothing, or of any other goods.  Instead, it has relied upon the possibility that there is, in Mr Caine's words, "a cognizance or awareness in Australia by a not unsubstantial number of people of the name IVY LEAGUE name and mark".  Mr Caine has relied here on what he says is a wide reputation for the opponent's trade mark in Australia, saying that this has accrued through its widespread use in the English language for over 50 years, various dictionary meanings, exposure in overseas magazines distributed in Australia, film and television references to the term, and an informal survey amongst employees of the opponent's solicitors.

The critical date here is the date of the filing of the present application - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, supra.  It is at that date that it must be shown that, because of the use of the applicant's mark, then deception or confusion was bound to occur amongst a substantial number of people likely to be concerned in the purchasing of the particular goods, - as per Kendall Company v Mulsyn Paint and Chemicals 109 CLR 300. However, having examined the opponent's evidence, I cannot agree that it has convincingly shown that it had a significant reputation in the mark in Australia for clothing. I am of the opinion that what the majority of the evidence does show is that, if there is an awareness of the term in this country, it is an imprecise one with various assumptions being drawn from the words as vaguely pertaining to one or a group of American universities. If those words were related to clothing, then I believe that the opponent's own evidence shows that all the average Australian clothes buyer would infer would be a reference to an indeterminate style of dress adopted by attendees of those institutions.

Given the evidentiary onus on it mentioned in the Nettlefold case, supra, I believe that the opponent needs to have done more than it has here to show that there existed a sufficient reputation in Australia for its marks, so that deception or confusion would be reasonably likely to occur because of the subject mark's use.

I therefore find that the opponent is not successful on this ground of its opposition.

Section 55
This section reads:

55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

(a)to refuse to register the trade mark; or

(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Having due regard to the provisions of s.55, nothing has been done, either in the evidence or in the opponent's submissions, which has convinced me, as the delegate of the Registrar, that I should decide otherwise than to register the trade mark, the subject of this application.

Decision
I have found that the opponent has not succeeded on any of the grounds relied upon in its opposition.  Accordingly, I dismiss the opposition and direct that the mark should proceed to registration.

Having been the successful party here, the applicant is entitled to its costs.  Consequently, I order that the opponent pay the applicant's costs in the matter.  On application those costs will be taxed and allowed by an officer of the Trade Marks Office, appointed for that purpose.

Ian Forno
Hearing Officer

18 July 2000